WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ELO v. 晁越 (Chao Yue)
Case No. D2021-1180
1. The Parties
Complainant is ELO, France, represented by CSC Digital Brand Services Group AB, Sweden.
Respondent is 晁越 (Chao Yue), China.
2. The Domain Name and Registrar
The disputed domain name <auchan.online> (the “Domain Name”) is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2021. On April 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 19, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
On April 26, 2021, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. Complainant submitted a request that English be the language of the proceeding on April 27, 2021 through an amended Complaint in English. Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent in English and Chinese of the Complaint, and the proceedings commenced on May 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 30, 2021.
On May 14, 2021, Respondent sent an email to the Center regarding settlement. On May 14, 2021, the Center informed that Parties if they would like to explore settlement options, Complainant should submit a request for suspension. On May 14, 2021, Complainant requested the suspension of the proceeding. Accordingly, the Center notified the Parties of the Suspension on May 14, 2021. On June 10, 2021, Complainant requested the reinstitution of the proceeding, noting that Respondent did not respond to Complainant’s emails of May 18 and June 2, 2021 regarding settlement. Further to Complainant’s request for reinstitution, the proceeding was reinstituted as of June 14, 2021, and the new Response due date was June 30, 2021. No further communication was received from Respondent. On July 9, 2021, the Center informed the Parties that it would proceed to appoint the Panel.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on July 27, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On July 31, 2021, further email communications were received from Respondent regarding settlement.
4. Factual Background
Complainant, ELO, formerly known as Auchan Holding SA, is a multinational retail group headquartered in Croix, France. Founded in 1960, the company has grown and is now the 11th largest food retailer in the world, operating in 17 countries, across Europe, Africa and Asia. In addition, with 354,851 employees worldwide, Complainant is also the 35th largest employer in the world. As of December 2019, its consolidated revenue, excluding taxes, was of EUR 33,370 million.
Complainant owns numerous trademark registrations for the AUCHAN mark, in a number of jurisdictions, including:
- International trademark registration number 284616 for AUCHAN and design mark, registered on June 5, 1964;
- International trademark registration number 625533 for AUCHAN word mark, registered on October 19, 1994;
- International trademark registration number 1011777 for AUCHAN and design mark, registered on February 19, 2009, designating China;
- European Union trademark registration number 000283101 for AUCHAN and design mark, registered on August 19, 2005; and
- European Union trademark registration number 004510707 for AUCHAN and design mark, registered on January 19, 2007.
Complainant also has an Internet presence and shares information about its products, services and news on its website at its domain name <auchan.fr>, registered on February 11, 1997. According to Similarweb.com, Complainant’s website at its primary domain name <auchan.fr> has received over 14.5 million visitors during the six-month period from July to December 2020.
Respondent registered the Domain Name on January 2, 2019. The Domain Name resolves to an inactive site.
Complainant first tried to contact Respondent on January 29, 2021, through a cease and desist letter sent by email. Complainant advised Respondent that the unauthorized use of its AUCHAN trademark within the Domain Name violated Complainant’s rights in the said trademark and requested voluntary transfer of the Domain Name. Respondent replied initially agreeing to cooperate but after subsequent emails requesting transfer of the Domain Name, Respondent stopped replying.
5. Parties’ Contentions
Complainant contends that (i) the Domain Name is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith.
In particular, Complainant contends that it has trademark registrations for the AUCHAN marks and owns domain names incorporating the AUCHAN marks. Complainant contends that Respondent registered and is using the Domain Name, to confuse Internet users looking for bona fide products and services under the well-known AUCHAN marks.
Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant’s marks, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Rather, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Name, when Respondent clearly knew of Complainant’s rights.
Except for the email communications received from Respondent regarding settlement as mentioned under section 3. (Procedural History), Respondent did not formally reply to Complainant’s contentions.
6. Discussion and Findings
6.1. Preliminary Procedural Issue – Language of the Proceeding
The Rules, in paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Complainant submitted its original Complaint in English. In its email communication to the Center on April 27, 2021 and in the amended Complaint, Complainant requests that the language of the proceeding should be English. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is in Chinese.
Complainant contends that the Domain Name is comprised of Latin characters. In addition, Complainant notes that the Domain Name is identical to Complainant’s trademark. Complainant also contends that it is unable to communicate in Chinese, and it would involve unfairly high costs and delay for Complainant to translate and conduct the proceeding in Chinese. Complainant notes that the term “Auchan” does not carry any specific meaning in the Chinese language.
In exercising its discretion to use a language other than that of the Registration Agreement for the Domain Name, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel accepts Complainant’s submissions regarding the language of the proceeding. The Panel notes that the Center notified the Parties in both Chinese and English of the language of the proceeding as well as notify Respondent in both Chinese and English of the Complaint. Respondent chose not to comment on the language of the proceeding nor did Respondent choose to file a formal Response. Rather, Respondent sent several email communications expressing his willingness to settle. Further, the Panel notes that the Domain Name was registered using Latin characters.
The Panel is also mindful of the need to ensure that the proceeding is conducted in a timely and cost‑effective manner. Complainant may be unduly disadvantaged by having to translate the Complaint into Chinese and to conduct the proceeding in Chinese. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
6.2. Substantive Issues
Under paragraph 4(a) of the Policy, to succeed, Complainant must satisfy the Panel that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name was registered and is being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed: a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to formally respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of its rights in the AUCHAN marks, which have been registered since at least as early as 1964, well before Respondent registered the Domain Name on January 2, 2019 as noted above. Complainant has also submitted evidence, which supports that the AUCHAN marks are widely known trademarks and a distinctive identifier of Complainant’s products and services. Complainant has therefore proven that it has the requisite rights in the AUCHAN marks.
With Complainant’s rights in the AUCHAN marks established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the Top-Level Domain (“TLD”) in which it is registered (in this case, “.online”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842.
Here, the Domain Name is identical to Complainant’s AUCHAN mark. The AUCHAN mark is recognizable in the Domain Name.
Thus, the Panel finds that Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant must make a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production on this element shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the AUCHAN marks, and does not have any rights or legitimate interests in the Domain Name. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the AUCHAN trademarks or to seek registration of any domain name incorporating the trademarks.
In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that the Domain Name resolves to an inactive webpage. Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interests in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration, WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Name.
Further, the nature of the Domain Name carries a high risk of implied affiliation with Complainant (see WIPO Overview 3.0, section 2.5.1).
Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Panel finds that Complainant provided ample evidence to show that registration and use of the AUCHAN marks long predate the registration of the Domain Name by Respondent. Complainant is also well established and known. Indeed, the record shows that Complainant’s AUCHAN marks and related services are widely known and recognized. Therefore, the Panel finds that Respondent knew or should have known of the AUCHAN marks when he registered the Domain Name. See WIPO Overview 3.0, section 3.2.2; See also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.
The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007.
As discussed above, the Domain Name resolves to an inactive page. The non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. See WIPO Overview 3.0, section 3.3. Here, the present circumstances, including the distinctiveness and reputation of the AUCHAN marks, the failure of Respondent to submit a formal response to the Complaint or to provide any evidence of actual or contemplated good-faith use, and the implausibility of any good-faith use to which the Domain Name may be put, support a finding of bad faith.
Accordingly, the Panel finds that Respondent has registered and is using the Domain Name in bad faith and Complainant succeeds under the third element of paragraph 4(a) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <auchan.online> be transferred to the Complainant.
Kimberley Chen Nobles
Date: August 5, 2021